USPTO Issues Final Rejection Of Apple's Rubberbanding Patent, Which Were Among Those The Jury Said Samsung Infringed

from the oops dept

We've argued repeatedly how silly it is for courts to move forward with cases over patent infringement while the USPTO is reviewing those same patents. Considering just how often patent re-exams lead to changes in the patents (including rejecting key claims), moving forward before the USPTO has ruled is kind of silly. It's guaranteed to lead to bad rulings. The latest is that the USPTO has issued a "final" rejection of Apple's "rubberbanding" patent (US Patent 7,469,381), which was one of the patents at issue in the Samsung Apple patent fight, and which the jury said Samsung infringed. In fact, the specific claim (19) that Samsung was said to have infringed was rejected by the USPTO.

We had noted a non-final rejection last fall, and now the USPTO has reiterated that with a final rejection. Of course, even "final rejection" is a bit of a misnomer, since Apple can (and probably will) still appeal to the Patent Trial and Appeal Board (PTAB). Still, given the significant doubt over the quality of the patent, it seems crazy to assume that it was valid as part of the lawsuit.

Also, in the meantime, if we're going to grant massively powerful, technology-landscape-changing patents to companies, is it really so much to ask that the USPTO not get it wrong so damn often? The fact that, on second review, they suddenly realize "oops, that was a mistake!" seems like the kind of thing that we should be worried about, given just how much power there is in a single bad patent.

I think the reason things get caught on re-exam is that the patent office has new art before it that it didn't catch the first time around. Sometimes, this is just the result of a bad examination the first time. Sometimes, it isn't. If you think of the vast scope of prior art out there (we're at what, over 8 million issued patents, who knows how many published applications, and literally uncounted masses of non-patent literature). There's no way that it is possible for the patent office to have reviewed all of the art that is out there before making a determination.

What we need is a better prior art search process that is able to focus the search and is more likely to pull up the relevant art. That's not as easy to do as it sounds, though, because given the bulk of prior art out there, even well-constructed electronic searches of the art are going to miss references that use different wording to describe the subject matter.

The patent office does let a lot of patents through that should never have made it (the one that was recently shot down on a mathematical formula should have been unpatentable subject matter from the outset), but sometimes they do a decent job with the art that is before them, and once the patentee tries to enforce the patent, the accused infringer spends a lot more time and money on searching and comes up with art the examiner didn't have.

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I've seen Examiner's do Google searches. It is not the best searching method. Some of the companies that do prior art searches have better electronic systems. Google and other web search engines run into the same issue of returning far more results than the patent examiner can go through.

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As a computer programmer of some 20+ years, I'd like to tell you that patents have no business anywhere near software, period. When I started, patents on software were autmatically invalid, and this lead to the explosion of technology that we have today. Only the scum of the earth would have the gall to re-invent history and call any sort of software patent a good thing.
Please peddle your apologies elsewhere.

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I think my post was in plain English, but let me summarize it briefly for one who apparently can't make it out. There is nothing in my posts regarding software patents or whether they are good or bad. My only comment was directed to why patent Examiner's, in any art area, might miss prior art. I'm assuming you didn't follow any of that, since you went off on a tangent. Maybe you're just trolling. In any event, if you want to flail around further with whatever your mind invents upon reading a post, I doubt I'll be bothered to respond again. I also doubt you're a programmer, since most programmers I know pay better attention to detail than you've evidenced here.

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No, you did not specifically state that software patents are good. But you did excuse the examiners for making having poor judgement and poor diligence in approving these patents. This is equivalent to saying, "well, yeah, if the examiners had x, then the patent system would work." This is called being an apologist. It indirectly supports the institution in question, which in this case is software patents.

I appologise if no one has ever walked you through inductive logic before, but it would explain your involvement in the patent world.

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Yeah, that does make searches harder, in all art areas though it seems especially problematic in software. In theory, vague or "indefinite" patent claims aren't supposed to get through the patent office either. They're supposed to be clear enough so that someone looking at it would have a reasonable understanding of whether they're within the claim scope. That's another area when bad examination causes problems, I suppose.

With respect to software, it's probably a good area for Congress to step into, but they don't seem to be willing to do it. So we'll stumble around a bit more while the courts try to figure it out.

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If you think of the vast scope of prior art out there (we're at what, over 8 million issued patents, who knows how many published applications, and literally uncounted masses of non-patent literature). There's no way that it is possible for the patent office to have reviewed all of the art that is out there before making a determination.

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Yes. Or at least, a problem with how prior art is searched and applied. I guess the big question is - how do you fix that? The sheer volume of prior art references is only going to go up. The patent examinations have to be done by a person who can't consider anywhere near the total amount of art out there, and if they can't find prior art to knock out a patent application they don't have much choice about letting it through.

I don't know how you fix that completely. It could certainly be improved. Some people might argue to just get rid of patents, but that's not a practical solution because there's no serious chance of that happening any time soon. So the big question, to me, is if we're going to have a patent system how do we deal with ever-growing numbers of applications and massive increases in the prior art, when you have a finite number of people sitting in the patent office trying to examine patent applications?

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I don't think it will be solved for many years. Both the amount of prior art and the number of patent applications are going to go up. The political pressure on the office seems to be primarily to reduce the backlog rather than to improve patent quality. Combine that with an unwillingness to spend money on anything (such as hiring tons of highly qualified examiners) and it's a recipe for millions of crappy patents for the foreseeable future.

Someday maybe we'll have a political climate that will allow massive reform of the patent system or complete abolishment.

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Reform, maybe, if we can muster the political will. I don't see abolition any time soon. There are international treaties involved and no incentive for any one country to unilaterally withdraw and abandon a patent system, putting their own businesses at a disadvantage in the other countries that keep them. So you'd have to get all of the most economically important countries to get rid of patents together. Seems like a long way off, if ever.

On the other hand, we have our representatives in Congress that are supposed to handle this stuff, and that's where people should be focusing attention. I don't think the Supreme Court is going to eliminate software patents with a decision. Software has been patentable for some time in the U.S., and the Supreme Court would probably look at the fact that Congress hasn't acted as indicating a correct interpretation of statute. In fact, 35 U.S.C. 101, which define patentable subject matter, has been interpreted extremely broadly since a 1980 Supreme Court decision. So the Congress has had more than 30 years to do something about it and hasn't acted. They could eliminate software patents overnight, or place new restrictions on them, or whatever. And if we want to get rid of them, that's what Congress is supposed to do. I suspect the Supreme Court will take the view that unless Congress acts to eliminate them, there is no reason to disallow them.

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There are international treaties involved and no incentive for any one country to unilaterally withdraw and abandon a patent system, putting their own businesses at a disadvantage in the other countries that keep them.

Why would they be at a disadvantage? If the US abolished patents and say the EU kept them, US companies could still get EU patents.

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The reason they'd be at at disadvantage is because under the treaties you can rely on activities in the U.S. (such as a filing) to establish priority in foreign countries. If the U.S. unilaterally dissolved its patent system and exited the treaty, then businesses in countries all over the world would be able to rely on their domestic activities when going for patents in other countries (EU, China, Australia, Japan, India, or whatever), and U.S. countries would not. It wouldn't hurt the big, wealthy companies as much, for for smaller entities, being able to rely on activities in the U.S. and having that extended time period to go into foreign countries can be critical.

But I think we're both in agreement that big reforms are needed. While we're at it, I'd knock the copyright term down to something reasonable as well, but that's another thread :)

"The fact that, on second review, they suddenly realize "oops, that was a mistake!" seems like the kind of thing that we should be worried about, given just how much power there is in a single bad patent."

Re-exams are not simply a "second review". They're more like a second review with help from the outside. Often, significant help from people that are the best in their field. When you put that kind of firepower on a patent of course you're going to have a better shot at rejecting/invalidating a claim.

And the PTO issuing a final rejection on a claim is not saying "opps we made a mistake!". It is simply acknowledging that there is now art (or another new issue in the newschool post-grant reviews) on the record that leads to a rejection.

The source of your misunderstanding this is your misunderstanding how and why the PTO issues patents. The how is that the PTO issues patents by default unless there is some issue at the time of review on the record. They do this at the behest of congress and nobody else. See 35 USC 102 and 151. The why is because there is nothing on the record at the time of the review (examination) that would prevent the issuance and for no other reason other than congress tells them to.

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Yeah. That gets back to the searching problems. Some examiner's are just bad. But most of them aren't. The problem is, the only way they can decide whether one is deserved is by looking at the prior art in front of them and comparing it to what the applicant is claiming for patent. If they're missing important prior art, then the patent may get through. Part of the reason we have the kind of proceedings that Apple is involved in right now is because third parties often have a better incentive and better resources to find the best prior art out there. So, in a way, the system is set up to acknowledge that patents are going to get through that shouldn't, and the idea is that some of the bad ones will be caught in post-grant proceedings, or in court, or whatever.

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Part of the reason we have the kind of proceedings that Apple is involved in right now is because third parties often have a better incentive and better resources to find the best prior art out there. So, in a way, the system is set up to acknowledge that patents are going to get through that shouldn't, and the idea is that some of the bad ones will be caught in post-grant proceedings, or in court, or whatever.

Then why not remove the presumption of validity, and make it clear that any patent brought in litigation first must go through a re-exam, where (as you admit) it will go through an adversarial review for the first time...

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Yeah, you could do that, although to be honest, I think that given the time and expense of getting a patent, and the fact that you've gone through the examination process, there is a good argument that the patent should be presumed valid (i.e. that the patent office did it's job correctly). That's in a perfect world, though, and the USPTO is far from perfect. I'm not sure the presumption of validity gets you are far these days as it used to, though. I think courts and the PTO both recognize that while you should be able to rely on the quality of an examination, it's basically a fiction at this point.

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Yes. I think once you've gone through the process you should be able to rely on a presumptive validity of the patent.

The problem is with the examination process, and that needs to be fixed. I think everyone knows the presumption of validity is a bit weak in reality, because the examination process isn't as good as it needs to be.

I guess my first point of attack in solving most of the problems with the patent system would be to focus on examination. If you can actually get to a point where the only patents that are getting allowed are the ones that should be, you take care of a lot of other issues in the process.

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"I'm not sure the presumption of validity gets you are far these days as it used to,"

it doesn't get you anywhere in fact, the only real effect it has is 1 to at least acknowledge that there is a reason for the patentee to be able to bring suit, and 2 (the only really important thing) that the burden of proof in the proceedings relating to invalidity is on the accused, not on the patentee.

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The reason is ostensibly a sophisticated legal reason having to do with the burden of proof. Which is also a sophisticated legal concept. It is really quite dum b but on the other hand, in the useful arts it usually makes sense.

What happens now?

So your dodgy patent gets thrown out - Samsung still have an appeals process going which means they will likely get off the hook for the millions of dollars of damage that 3 lines of bounceback code caused.

What happens in the same situation if the case was closed? Do you have recourse to come back and say I'd like my money back, with interest thanks? How about licensing - I presume licensing deals would have a clause that makes says payment isn't contingent on the patent being legit

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Usually, if the patent falls, licensing deals are going to go down with it. There may be exceptions, depending on what the license says (though if there is even a question, I wouldn't want to be in the licensor's shoes).

I don't think Samsung is likely to get any of its legal expenses back. Have they paid any of the judgment at this point?

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No they haven't paid any of the judgement yet. I'm betting Apple well never see a single dime of the supposed billion in damages after the USPTO is done reviewing the patents and the 'the jury can't do math or follow legal instructions' redo of the damages phase are complete.

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tront patent

what? this is insane. get rid of the lot. its stupid its idiocy its insane. the rulers should better but they are stupid little kids who shouldnt be where they are. the kids are idiots, the idiots who put them where they are , are very stupid idiots. the whole world is insane and all the people in charge are stupid idiotic lunatics. just look at north korea and realise that the rest of them are the same. dont believe me, look at china and russia supporting them, still dont believe me, look at europe supporting them. the whold world is going to hell faster than a rollercoaster ride and the sane people are not able to help cause they have been victimised by the stupid idiots who were handed power by other idiots. fuck them all and to hell with the world. the sooner this shit ends the better. ps fuck you all.

Off Topic

I guess this may be off topic, but its no wonder so many Apple users of iPhone 4s-5 hate it when someone buys a new Samsung phone. When I told my iPhone friends I had bought a new Android Samsung Galaxy phone, they were so disappointed. A couple even threatened to delete me from their contacts list. Those iPhone users hate it when your phone can do tricks theirs can't. Especially when they are trying to find themselves with the new Apple maps, and Siri keeps saying, "You are the one that is lost, don't blame me."

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My girlfriend just got an iPhone and the maps are just shite. She installed google maps without me prompting here. The only problem is if you click an address anywhere it opens crapple maps instead of googles far superior version.

more dissembling by Masnick

'how silly it is for courts to move forward with cases over patent infringement while the USPTO is reviewing those same patents'

With such statements you only prove how little you know about patents and the way the system works. For the PTO to reject all claims in reexam is standard practice. In effect, they are punting to the courts who will make the final determination. Many who are experienced in these matters will tell you the PTO has become a rubber stamp for large infringers which is the role Apple is most often in. Sometimes it backfires on them.

Mere dissembling by thieves! It is not innovation that patents hinder, but the theft of.

Do you know how to make a Stradivarius violin? Neither does anyone else. Why? There was no protection for creations in his day so he like everyone else protected their creations by keeping them secret. Civilization has lost countless creations and discoveries over the ages for the same reason. Think we should get rid of patents? Think again...or just think!

They sell blog filler and "insights" to major corporations including MS, HP, IBM etc. who just happen to be some of the world’s most frequent patent suit defendants. Obviously, he has failed to report his conflicts as any reputable reporter would. But then Masnick and his monkeys are not reporters. They are hacks representing themselves as legitimate journalists receiving funding from huge corporate infringers. They cannot be trusted and have no credibility. All they know about patents is they don’t have any.

Re: more dissembling by Masnick

I think I'll take the risk of not being able to make a Stradivarius over the massive crushing of tech (and other) innovation the current patent 'patent rounded corners and simple visual effects' idiocy that is going on nowadays. I know which one adversely affects culture, technology and economics more...